Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88208818 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 100 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88208818/mark.png |
| LITERAL ELEMENT |
AMAZON |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| 2(d) REFUSAL The application stands subject to a Section 2(d), likelihood of confusion, in view of U.S. Registration Nos. 2832943 (AMAZON), 2837138
(AMAZON.COM), and 5508999 (AMAZON and design). In a comparison of services, the Office Action notes, that the Registrant?s services are as follows: Reg. No. 2832943 ? AMAZON ? Electronic retailing
services featuring, among other things, motor vehicles and parts and accessories thereof Reg. No. 2837138 ? AMAZON.COM ? Online retail store services featuring, among other things, motor vehicles and
parts and accessories thereof Reg. No. 5508999 ? AMAZON and design ? Retail store services featuring, among other things, automotive and industrial supplies IN RESPONSE, applicant respectfully notes
that Amazon does not sell motor vehicles in the United States, and was not selling parts/accessories as early as alleged in the various statements of use. Thus, those notes goods/services cited in
the Office Action should have been deleted from the description of the goods and services. SPECIMEN The Office Action notes that Registration is refused because the specimen in International Class 35
appears to consist of a digitally altered image or mock-up of the mark on business signage and does not show the applied-for mark in actual use in commerce. IN RESPONSE, applicant very respectfully
notes that the specimen is not a digitally altered image nor is it a mock-up of the mark. The specimen shows the very first use of the mark for the services. In other words, this signage represents
actual use of the mark in commerce. FURTHER, the Office Action notes that, the specimen consists of a storefront with each letter of the proposed mark printed on paper and affixed to the storefront
window over additional printed papers bearing the words ?AUTO? and ?SALES.? The specimen also indicates that the photograph was taken nearly 14 years ago (in 2005), but the printed pages affixed to
the storefront window appear to be temporary in nature. IN RESPONSE, applicant opened business early in 2005 using the signage as pictured in the submitted specimen and operated for quite some time
with that signage as pictured. Again, that signage is actual use of the mark in commerce. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_2167424398-20190904214200082977_._Automotive_News_09_24_2017.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0004.JPG |
| ORIGINAL PDF FILE |
evi_2167424398-20190904214200082977_._CNN_Business_11_29_2018_auto_parts.pdf |
CONVERTED PDF FILE(S)
(6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0005.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0006.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0007.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0008.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0009.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0010.JPG |
| ORIGINAL PDF FILE |
evi_2167424398-20190904214200082977_._The_Verge_article_Amazon_not_selling_cars.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0011.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0012.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\088\88208818\xml4\ROA0013.JPG |
| DESCRIPTION OF EVIDENCE FILE |
News articles showing that Amazon does not sell automobiles, and was not selling parts/accessories as early as alleged. |
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
035 |
| DESCRIPTION |
| Retail outlet featuring parts for motor vehicles; retail outlet selling parts for motor vehicles |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 08/22/2005 |
| FIRST USE IN COMMERCE DATE |
At least as early as 08/22/2005 |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
035 |
| TRACKED TEXT DESCRIPTION |
Retail outlet featuring parts for motor vehicles; retail outlet selling parts
for motor vehicles; retail outlet featuring parts for motor vehicles, namely, the bringing together a variety of motor vehicle parts enabling consumers to
conveniently view and purchase those goods |
| FINAL DESCRIPTION |
| Retail outlet featuring parts for motor vehicles; retail outlet featuring parts for motor vehicles, namely, the bringing together a
variety of motor vehicle parts enabling consumers to conveniently view and purchase those goods |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 08/22/2005 |
| FIRST USE IN COMMERCE DATE |
At least as early as 08/22/2005 |
| ATTORNEY SECTION (current) |
| NAME |
J. M. (Mark) Gilbreth |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
GILBRETH ROEBUCK, P.C. |
| INTERNAL ADDRESS |
P. O. BOX 2428 |
| STREET |
P. O. BOX 2428 |
| CITY |
BELLAIRE |
| STATE |
Texas |
| POSTAL CODE |
77402-2428 |
| COUNTRY |
US |
| PHONE |
713-667-1200 |
| EMAIL |
jmark@gilbreth.org |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
AAS/03 |
| ATTORNEY SECTION (proposed) |
| NAME |
J. M. (Mark) Gilbreth |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
GILBRETH ROEBUCK, P.C. |
| INTERNAL ADDRESS |
P. O. BOX 2428 |
| STREET |
P. O. BOX 2428 |
| CITY |
BELLAIRE |
| STATE |
Texas |
| POSTAL CODE |
77402-2428 |
| COUNTRY |
United States |
| PHONE |
713-667-1200 |
| EMAIL |
jmark@gilbreth.org |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
AAS/03 |
| CORRESPONDENCE SECTION (current) |
| NAME |
J. M. (MARK) GILBRETH |
| FIRM NAME |
GILBRETH ROEBUCK, P.C. |
| INTERNAL ADDRESS |
P. O. BOX 2428 |
| STREET |
P. O. BOX 2428 |
| CITY |
BELLAIRE |
| STATE |
Texas |
| POSTAL CODE |
77402-2428 |
| COUNTRY |
US |
| PHONE |
713-667-1200 |
| EMAIL |
jmark@gilbreth.org; jmark77001@gmail.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
AAS/03 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
J. M. (Mark) Gilbreth |
| FIRM NAME |
GILBRETH ROEBUCK, P.C. |
| INTERNAL ADDRESS |
P. O. BOX 2428 |
| STREET |
P. O. BOX 2428 |
| CITY |
BELLAIRE |
| STATE |
Texas |
| POSTAL CODE |
77402-2428 |
| COUNTRY |
United States |
| PHONE |
713-667-1200 |
| EMAIL |
jmark@gilbreth.org |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
AAS/03 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/ J M GILBRETH / |
| SIGNATORY'S NAME |
J. M. (Mark) Gilbreth |
| SIGNATORY'S POSITION |
Attorney of Record, Texas Bar Member |
| SIGNATORY'S PHONE NUMBER |
7136671200 |
| DATE SIGNED |
09/04/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Sep 04 21:49:00 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XX-2
0190904214900944840-88208
818-61021d65492cc1c4c6c83
e58d3cf62f72722d89e8a4d5d
a659455c37acabf74b2d-N/A-
N/A-20190904214200082977 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88208818 AMAZON(Standard Characters, see http://uspto.report/TM/88208818/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
2(d) REFUSAL The application stands subject to a Section 2(d), likelihood of confusion, in view of U.S. Registration Nos. 2832943 (AMAZON), 2837138 (AMAZON.COM), and 5508999 (AMAZON and design). In a
comparison of services, the Office Action notes, that the Registrant?s services are as follows: Reg. No. 2832943 ? AMAZON ? Electronic retailing services featuring, among other things, motor vehicles
and parts and accessories thereof Reg. No. 2837138 ? AMAZON.COM ? Online retail store services featuring, among other things, motor vehicles and parts and accessories thereof Reg. No. 5508999 ?
AMAZON and design ? Retail store services featuring, among other things, automotive and industrial supplies IN RESPONSE, applicant respectfully notes that Amazon does not sell motor vehicles in the
United States, and was not selling parts/accessories as early as alleged in the various statements of use. Thus, those notes goods/services cited in the Office Action should have been deleted from
the description of the goods and services. SPECIMEN The Office Action notes that Registration is refused because the specimen in International Class 35 appears to consist of a digitally altered image
or mock-up of the mark on business signage and does not show the applied-for mark in actual use in commerce. IN RESPONSE, applicant very respectfully notes that the specimen is not a digitally
altered image nor is it a mock-up of the mark. The specimen shows the very first use of the mark for the services. In other words, this signage represents actual use of the mark in commerce. FURTHER,
the Office Action notes that, the specimen consists of a storefront with each letter of the proposed mark printed on paper and affixed to the storefront window over additional printed papers bearing
the words ?AUTO? and ?SALES.? The specimen also indicates that the photograph was taken nearly 14 years ago (in 2005), but the printed pages affixed to the storefront window appear to be temporary in
nature. IN RESPONSE, applicant opened business early in 2005 using the signage as pictured in the submitted specimen and operated for quite some time with that signage as pictured. Again, that
signage is actual use of the mark in commerce.
EVIDENCE
Evidence in the nature of News articles showing that Amazon does not sell automobiles, and was not selling parts/accessories as early as alleged. has been attached.
Original PDF file:
evi_2167424398-20190904214200082977_._Automotive_News_09_24_2017.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2167424398-20190904214200082977_._CNN_Business_11_29_2018_auto_parts.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_2167424398-20190904214200082977_._The_Verge_article_Amazon_not_selling_cars.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail outlet featuring parts for motor vehicles; retail outlet selling parts for motor vehicles
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/22/2005 and first used in commerce at least as early as 08/22/2005 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Retail outlet featuring parts for motor vehicles;
retail outlet selling parts for motor vehicles;
retail outlet featuring parts for motor vehicles, namely, the bringing together a variety of motor vehicle parts enabling consumers to conveniently view and purchase
those goodsClass 035 for Retail outlet featuring parts for motor vehicles; retail outlet featuring parts for motor vehicles, namely, the bringing together a variety of motor vehicle parts
enabling consumers to conveniently view and purchase those goods
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/22/2005 and first used in commerce at least as early as 08/22/2005 , and
is now in use in such commerce.
The applicant's current attorney information: J. M. (Mark) Gilbreth. J. M. (Mark) Gilbreth of GILBRETH ROEBUCK, P.C., is located at
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
US
The docket/reference number is AAS/03.
The phone number is 713-667-1200.
The email address is jmark@gilbreth.org
The applicants proposed attorney information: J. M. (Mark) Gilbreth. J. M. (Mark) Gilbreth of GILBRETH ROEBUCK, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no.
XXX, is located at
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
United States
The docket/reference number is AAS/03.
The phone number is 713-667-1200.
The email address is jmark@gilbreth.org
J. M. (Mark) Gilbreth submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any
U.S. Commonwealth or territory.
The applicant's current correspondence information: J. M. (MARK) GILBRETH. J. M. (MARK) GILBRETH of GILBRETH ROEBUCK, P.C., is located at
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
US
The docket/reference number is AAS/03.
The phone number is 713-667-1200.
The email address is jmark@gilbreth.org; jmark77001@gmail.com
The applicants proposed correspondence information: J. M. (Mark) Gilbreth. J. M. (Mark) Gilbreth of GILBRETH ROEBUCK, P.C., is located at
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
United States
The docket/reference number is AAS/03.
The phone number is 713-667-1200.
The email address is jmark@gilbreth.org
SIGNATURE(S)
Response Signature
Signature: / J M GILBRETH / Date: 09/04/2019
Signatory's Name: J. M. (Mark) Gilbreth
Signatory's Position: Attorney of Record, Texas Bar Member
Signatory's Phone Number: 7136671200
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: J. M. (MARK) GILBRETH
GILBRETH ROEBUCK, P.C.
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
Mailing Address: J. M. (Mark) Gilbreth
GILBRETH ROEBUCK, P.C.
P. O. BOX 2428
P. O. BOX 2428
BELLAIRE, Texas 77402-2428
Serial Number: 88208818
Internet Transmission Date: Wed Sep 04 21:49:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019090421490094
4840-88208818-61021d65492cc1c4c6c83e58d3
cf62f72722d89e8a4d5da659455c37acabf74b2d
-N/A-N/A-20190904214200082977
